USPTO Patents Application 10086014

THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

Appellants:

Andrea Hughs-Baird, et al.

Appl. No.:

10/086,014

Conf. No.:

3796

Filed:

February 28, 2002

Title:

GAMING DEVICE HAVING IMPROVED

ACCEPTANCE GAME WITH MASKED OFFERS

Art Unit:

3714

Examiner:

Robert E. Mosser

Docket No.:

0112300-610

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

APPELLANTS' APPEAL BRIEF

Sir:

Appellants submit this Appeal Brief in support of the Notice of Appeal filed
on and received by the U.S. Patent and Trademark Office on January 9, 2007.
This Appeal is taken from the Final Rejection dated October 13, 2006.

Please charge deposit account number 02-1818 for any fees which are due
in connection with this Appeal Brief.

Appl. No. 10/086,014

I. REAL PARTY IN INTEREST

The real party in interest for the above-identified patent application on
appeal is IGT by virtue of an Assignment dated February 26, 2002, and recorded
on February 28, 2002 at the United States Patent and Trademark Office at reel
012661, frame 0369.

2

Appl. No. 10/086,014

II. RELATED APPEALS AND INTERFERENCES

Appellants, Appellants' legal representative and the Assignee of the above-
identified patent application do not know of any prior or pending appeals,
interferences or judicial proceedings which may be related to, directly affect or be
directly affected by or have a bearing on the Board's decision with respect to the
above-identified Appeal.

3

Appl. No. 10/086,014

III. STATUS OF CLAIMS

Claims 1 to 18 and 20 to 22 are pending in the above-identified patent
application. Claims 11 to 17, 21 and 22 stand allowed. Claim 19 has been
cancelled. Claims 1 to 10, 18 and 20 stand rejected. Therefore, Claims 1 to 10,
18 and 20 are being appealed in this Brief. A copy of the appealed claims is
attached in the Claims Appendix.

4

Appl. No. 10/086,014

IV. STATUS OF AMENDMENTS

No amendments were made in this application after the final rejection.

5

Appl. No. 10/086,014

V. SUMMARY OF CLAIMED SUBJECT MATTER

The following is a concise summary of the invention (and is substantially
taken from pages 2 to 1 9 of the present application).

Many gaming machines known prior to the present invention had a primary
or base game and a secondary or bonus game. These known gaming machines
required the player to make a wager to play the primary or base game (such as a
conventional slot game having a plurality of reels). In the play of the primary or
base game, the player either won an award or did not win an award. Many of
these known gaming machines provided the secondary or bonus game to the
player if a triggering event occurred in the play of the primary game. In the play of
many known secondary or bonus games, the player usually wins an award; and
the secondary or bonus game is played to determine the amount of the award
won by the player.

One well known gaming machine is the TOP DOLLAR™ gaming machine,
which is manufactured by IGT, the assignee of the present application. An
advertisement for this gaming machine was submitted in the Information
Disclosure Statement filed on June 4, 2002 for the present application. This
gaming machine includes an offer and acceptance bonus game. This known offer
and acceptance bonus game is very generally described in the background of the
present invention on page 3, lines 2 to 10. The present invention is easiest
explained after explaining this known offer and acceptance bonus game. This
known offer and acceptance bonus game is easiest explained in connection with
the illustration below.

6

Appl. No. 10/086,014

In the known offer and acceptance bonus game, the gaming device
processor randomly selects an offer from a plurality of offers of differing values
(e.g., 1000, 300, 200, 100, 75, 60 and 40). An offer can include one or more of
these values. The gaming device indicates the processor selected offer to the
player. If the selected offer is not a final offer, the gaming device enables the
player to accept or reject the indicated offer. If the player accepts the offer or the
offer is a final offer, the gaming device pays to the player an award equal to the
offer and the bonus game ends. If the player rejects the offer, the gaming device
repeats the process until either the selected offer is accepted by the player or a
final selected offer is paid to the player. The TOP DOLLAR™ gaming machine
provides the player up to three selected offers (which the player can accept or
reject) before providing a final selected offer to the player (if the player rejects the
three previous selected offers). The player does not make inputs or otherwise
take part in the selection of the offers. The processor of the gaming machine
randomly selects each of the offers.

While bonus games have become popular in casinos, many players
become bored with playing the same games over and over again. Accordingly,

7

Appl. No. 10/086,014

there is a well established continuing need in the gaming industry for gaming
design manufacturers to develop new and different games.

The gaming device and method disclosed in the present application
provides the player an opportunity to directly and independently select each of the
offers (instead of having the processor randomly select the offers for the player).
One embodiment disclosed in present application is best explained in connection
with the following illustration taken from the present application:

In this example embodiment, the gaming device displays a plurality of
masked selections (e.g., labeled A, B, C, D and E). The gaming device includes
a plurality of offers (not shown to the player) which are each directly and
individually associated with separate ones of these masked selections. The
gaming device enables the player to select one of the masked selections and
reveals the offer associated with the player picked masked selection. The gaming
device enables the player to accept or reject the revealed offer. By picking one of
the masked selections, the player directly picks the offer which the player can
accept or reject.

If the player accepts the offer directly and individually associated with the
player picked selection, the gaming device provides the value of the offer to the
player and the game ends. If the player rejects the offer, the gaming device

8

Appl. No. 10/086,014

directly and individually reassociates the offers (including the rejected offer) with
the masked selections, and enables the player to make another selection from the
plurality of masked selections. This process repeats until the player accepts an
offer directly associated with a player picked selection or the offer is a final offer
(which is provided to the player). Thus, each offer provided to the player is
independent of the previous offers because each offer is directly and individually
associated with one of the masked selections.

An example of this is described in connection with Fig. 3B of the present
application (reproduced below). The player picks masked selection labeled D and
the gaming device reveals the offer of 50 which is directly and individually
associated with the player picked selection. The gaming device enables the
player to accept or reject the revealed offer of 50. If the player accepts the
revealed offer of 50, the gaming device provides the value of 50 credits to the
player and ends the game. If the player rejects the revealed offer of 50, the
gaming device directly and individually reassociates all of the offers (including the
rejected offer of 50) with the 5 masked selections and enables the player to again
pick one of the 5 masked selections to reveal an offer.

FIG.3B /~ 100

You selected D which is an offer of 50

104 106

102

112 110

w\S//_ . s

50

116

T r

118

120

122

ABC ~Dr E

-/>\

OFFERS

OFFER REMAINING

| 50 | ]ACCEPTl [REJECT | [ 2 |

9

Appl.No. 10/086,014

Accordingly, the gaming device and method of the present invention
provides an improved offer and acceptance game in which the player directly
selects the offers presented to the player to accept or reject.

A further summary of the invention by way of reference to the drawings and
specification for each of the independent claims and each means plus function
claim may be found in Appendix A to this Brief.

Although specification citations are given in accordance with C.F.R.
1.192(c), these reference numerals and citations are merely examples of where
support may be found in the specification for the terms used in this section of the
Brief. There is no intention to suggest in any way that the terms of the claims are
limited to the examples in the specification. As demonstrated by the references
numerals and citations below, the claims are fully supported by the specification
as required by law. However, it is improper under the law to read limitations from
the specification into the claims. Pointing out specification support for the claim
terminology as is done here to comply with rule 1.192(c) does not in any way limit
the scope of the claims to those examples from which they find support. Nor does
this exercise provide a mechanism for circumventing the law precluding reading
limitations into the claims from the specification. In short, the references numerals
and specification citations are not to be construed as claim limitations or in any
way used to limit the scope of the claims.

10

Appl. No. 10/086,014

VI. GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL

1. Claims 1 to 10, 18 and 20 stand rejected under 35 U.S.C. §1 02(e) as being
unpatentable over U.S. Patent No. 6,648,754 to Baerlocher et al. (referred
to herein as "Baerlocher").

2. Claims 1 to 10, 18 and 20 stand rejected under 35 U.S.C. §112, first
paragraph, because the specification, while being enabling for awarding a
selection, does not reasonably provide enablement for paying a selection.

11

Appl. No. 10/086,014

VII. ARGUMENT

1. Baerlocher Provides an Offer and Acceptance Game in which Each of
the Offers is Determined through a Multiple Step Process and Each Offer
After the First Offer is Dependent on Each of the Previous Offer
Determinations

The Examiner rejected the appealed claims under 35 U.S.C. §1 02(e) as
being unpatentable over Baerlocher. Baerlocher is also assigned to IGT, the
assignee of the present application. Baerlocher discloses a gaming device having
an offer and acceptance game which determines each offer to make to the player
for acceptance or rejection through a multiple-step process, and wherein each
offer after the first offer is based on each of the previous offer determinations.
Baerlocher is easiest explained using the figures of Baerlocher.

Fig. 5A of Baerlocher (reproduced below), discloses a plurality of player
selectable masked selections 108a to 108x. The gaming device processor
randomly associates different amounts or numbers of steps with each of the
masked selections. In this embodiment, the numbers of steps associated with the
masked selections can range from 1 to 25 steps.

12

Appl. No. 10/086,014

FIG.5A

ACCEPT ANY DISPLAYED OFFER OR TRY
UP TO TWO TIMES TO INCREASE YOUR INITIAL
OFFER WITHOUT EXCEEDING THE LMT OF 25

108a

108b

108c

108d

108e

108f

108g

108h

108i

108j

108k

1081

108m

108n

108g

108p

108q

108r

108s

108t

108u

108v

108w

108x

ST EPS ACCRU ED
112 ^" j 0 1

OFFERS
OFFER REMAINING

CONSOLATION

1 ™ K m [JL> 16

30,32

500

24

300

23

200

22
21

150

19

100

18

17

16

70

HI-

13

12

50

11

10

9
8

30

7

6
5

4

3

20

2
1

The Baerlocher gaming device enables a player to pick one of the masked
selections from the plurality of player selectable selections 108a to 108x. For
example, as seen in Fig. 5B (reproduced below), the player picks selection 108g.

13

Appl. No. 10/086,014

OCEPT /

FIG.5B

ACCEPT ANY DISPLAYED OFFER OR TRY
UP TO TWO TMES TO INCREASE YOUR INITIAL
OFFER WITHOUT EXCEEDING THE IMT OF 25

n

108a

108b

108c

1084

108e

108f

108h

108J

108]

108k

1081

108m

lfign

108o

108p

108j

108r

108s

108t

108u

108v

108w

108x

112

ST EPS ACCRU ED

OFFERS
OFFER REMAINING

i^r \ 30

6 -J~\ ACCEPT

p~ic

CONSOLATION

Hoh -n

io h -ie

Steps Offers

The gaming device reveals the number of steps associated with the player picked
selection 108g. As seen in Fig. 5B, the gaming device reveals that selection 108g
is associated with 7 steps. The gaming device adds the revealed number of steps
associated with the player picked selection to the Steps Accrued meter 112. As
seen in Fig. 5B, the 7 steps associated with selection 108g are accumulated in the
Steps Accrued meter 112.

The Baerlocher gaming device determines the offer associated with the
accumulated number of steps which at this point is 7. As seen in the chart on the
right side of Fig. 5B, the gaming device determines that the accumulated 7 steps
are associated with an offer of 30. Each offer is directly associated with one or
more accumulated number of steps and not directly associated with one of the
player selectable masked selections.

The Baerlocher gaming device enables the player to accept or reject the
determined offer. In this example, the gaming device enables the player to accept
or reject the offer of 30. If the player accepts the offer of 30, the gaming device

14

Appl. No. 10/086,014

pays a value of 30 credits to the player and the game ends. If the player rejects
the offer of 30, since the player has at least one remaining offer, the gaming
device enables the player to pick another selection. In this example, the player
rejects the offer of 30.

Fig. 5C of Baerlocher (reproduced below) illustrates that the player then
picks selection 1081.

FIG.5C

ACCENT ANY DISPLAYED OFFER OR TRY
UP TO TWO TMES TO INCREASE YOUR NTI AL
OFFER WITHOUT EXCEEDING THE LIMIT OF 25

108a

108b

108c

108d

108e

108f

7

108h

108i

108j

108k

8 c

108m

108n

108o

108p

108g

108r

108s

108t

108u

108v

108y

108x

STEPS ACCRUED
2^ H 15 |

REMAINING ... , ,

CONSOLATION

106 Q~ | ACCEPT 1 | 10 h - il4 L 10 l ^ 16

Steps

Offers

500

hfl-

300

23
22

200
150

19

100

m

14
13
12
11

50

10
9
8
7

30

6
5
4
3
2
1

20

The gaming device reveals that picked selection 1081 is associated with 8 steps.
The revealed 8 steps are added to the previously revealed 7 steps to result in a
total of 15 accumulated steps which are shown in the Steps Accrued meter 112.
The gaming device determines that the 15 accumulated steps are associated with
an offer of 70. The gaming device enables the player to accept or reject the offer
of 70 (in the same manner as described above). It should be appreciated that
after the first offer, the accumulated number of steps utilized to determine each
offer is based on the number of steps associated with each of the player's

15

Appl. No. 10/086,014

previously picked selections. In the above example, the second offer (after the
first offer is rejected) is dependent on the 8 steps associated with picked selection
108i and on the 7 steps associated with previously picked selection 108g. In this
example, the player rejects the offer of 70 associated with the accumulated 15
steps.

Fig. 5D of Baerlocher (reproduced below) illustrates that the player picks
selection 108s.

FIG.5D

ACCENT ANY DISPLAYED OFFER 3 TR
UP TO TWO TMES TO INCREASE YOUR INITIAL
OFFER WITHOUT EXCEEDING THE LIMIT OF 25

30,32

108a

108b

108c

108d

108c

108f

7

108h

lOJBj

108j

108k

8

108m

108a

108o

108p

108g

108r

Ll3

108t

108u

108v

108w

108x

STEPS ACCRUED
28

, a™ REMAINING

102 ^/ j bust I I 0 p

C ONSOLATIO N
106 U~ \ ACCEPT] 1 10 h , 114

20 [ in

25

500

24

23

22
21

150

20
19

100

16

70

-fl-

13
12
11

50

10
9
8

30

5
4
3
2
1

20

The gaming device reveals that picked selection 108s is associated with 13 steps.
The revealed 13 steps are added to the previously accumulated 15 steps to result
in a total of 28 accumulated steps which are displayed in the Steps Accrued meter
112. The 28 accumulated steps exceed a termination limit of 25 steps and the
player is provided no more offers to accept or reject. The gaming device provides
a consolation award of 10 credits to the player (as illustrated in the Consolation
meter 114) and the game ends. In the Baerlocher game, after the first offer, a

16

Appl. No. 10/086,014

chance exists with each rejected offer and each picked selection that the
accumulated number of steps associated with the multiple picked selections will
be greater than the termination limit of 25 steps. Thus, the likelihood of going
over the termination limit increases with each picked selection and with each
subsequent pick, the player risks that they will only win the consolation award. In
other words, the accumulation of the numbers of steps associated with the picked
selections in combination with the termination limit associated with a number of
accumulated steps creates a dynamic wherein after each picked selection, the
player decides whether to accept the current offer or pick another selection and
risk exceeding the termination limit (and only winning the consolation award).
Thus, with each rejected offer, the chances of exceeding the termination limit
increase for each subsequently picked selection.

The above describes the primary embodiments of Baerlocher. Baerlocher
also discloses three alternative embodiments.

In one alternative embodiment in Baerlocher, if the player rejects the offer,
the gaming device reshuffles or redistributes the numbers of steps associated with
the selections 108a through 108x after each offer. (See col. 10, lines 36 to 38).

In another alternative embodiment in Baerlocher, the game alternatively
does not enable the player to reselect a previously picked selection and in turn
reveals or unmasks all previously picked selections throughout the game. (See
col. 10, lines 33 to 36).

In another alternative embodiment in Baerlocher, the game enables the
player to pick the same selections 108a through 108x two or more times and
enables the same number of steps to be generated whether or not the player
picks the same selections a plurality of times, (see col. 10, lines 40 to 44).

In the primary embodiments described above and in each of these
alternative embodiments:

17

Appl. No. 10/086,014

1 . the offers of Baerlocher are not directly and individually associated
with the player selectable masked selections;

2. the different offers of Baerlocher are associated with different
numbers of accumulated steps;

3. each offer of Baerlocher provided to the player to accept or reject is
determined based on the number of steps accumulated in the Steps Accrued
meter; and

4. after the first offer of Baerlocher is rejected, each offer is based on
the sum of the steps associated with each of the previously picked selections.

2. Baerlocher Does Not Directly and Individually Associate the Offers
with the Selections, such that Each Offer is Directly and Individually
Associated with a Separate One of the Selections as in Claims 1 to 10, 18
and 20

Claim 1 is directed to a gaming device comprising, amongst other
elements:

a processor adapted to communicate with the display device and the
input device, said processor operable to execute said instructions to
operate with said display device and said input device, for each play of the
game, to:

(a) directly and individually associate said offers with said
selections, such that each offer is directly and individually
associated with a separate one of the selections,

(e) repeat steps (a) to (d) at least once if said player rejects said
revealed offer, wherein if the player rejects said revealed offer, for
said repeat of step (a) said revealed offer is directly and
individually reassociated with one of said masked selections
for at least one subsequent selection by the player.

18

Appl. No. 10/086,014

Similarly, Claim 18 is directed to a method for operating a game of a
gaming device, said method comprising, amongst other elements, for each play of
the game, the steps of:

(b) directly and individually associating a plurality of offers
with a plurality of selections, such that each offer is directly
and individually associated with a separate one of the
selections, wherein said plurality of offers are each payable to a
player;

(i) repeating steps (b) through (h) if the player rejects said offer
and the offer is not the last offer, wherein if the player rejects said
revealed offer, for said repeat of step (b) said revealed offer is
directly and individually reassociated with one of said
selections for at least one subsequent selection by the player.

Contrary to this express claim language, the Baerlocher offers are not
directly and individually associated with the selections, such that each offer is
directly and individually associated with a separate one of the selections. As
described above, in Baerlocher, certain of the offers are associated with the same
number of accumulated steps and certain of the offers are associated with
different numbers of accumulated steps. The individual amounts or numbers of
steps are associated with the selections. The Baerlocher offers are thus clearly
not directly and individually associated with the selections. For this reason alone,
the rejection under section 102 of these Claims 1 and 18 (and the claims which
depend therefrom) should be reversed.

Moreover, in Baerlocher, if the player rejects the revealed offer, the
revealed offer is not directly and individually reassociated with one of the masked
selections for at least one subsequent selection by the player as in steps 1 (e) and
18(i). For at least this additional reason, the rejection under section 102 of Claims
1 and 18 (and the claims which depend therefrom) should be reversed.

19

Appl. No. 10/086,014

3. After the First Offer is Rejected, Baerlocher Does Not Reveal the Offer
Directly and Individually Associated with the Selected Selection as in
Claims 1 to 10, 18 and 20

Claim 1 is directed to a gaming device comprising, amongst other
elements:

a processor adapted to communicate with the display device and the
input device, said processor operable to execute said instructions to
operate with said display device and said input device, for each play of the
game, to:

(b) reveal the offer directly and individually associated
with the selected selection to the player;

(e) repeat steps (a) to (d) at least once if said player
rejects said revealed offer, wherein if the player rejects said
revealed offer, for said repeat of step (a) said revealed offer is
directly and individually reassociated with one of said masked
selections for at least one subsequent selection by the player.

Similarly, Claim 18 is directed to a method for operating a game of a
gaming device, said method comprising, amongst other elements, for each play of
the game, the steps of:

(f) revealing said offer directly and individually
associated with said picked selection to the player;

(i) repeating steps (b) through (h) if the player rejects said
offer and the offer is not the last offer, wherein if the player
rejects said revealed offer, for said repeat of step (b) said
revealed offer is directly and individually reassociated with
one of said selections for at least one subsequent selection
by the player.

20

Appl. No. 10/086,014

Contrary to this express claim language, the Baerlocher gaming device
does not reveal the offer directly and individually associated with the selected
selection to the player after the player rejects a first offer. In Baerlocher, for each
selection picked by the player, the gaming device reveals the number of steps
associated with the selection picked by the player. The number of steps
associated with the picked selection are accumulated. The accumulated number
of steps are used to determine the offer made to the player for acceptance or
rejection. After the player rejects a first offer, any subsequent offer is based on
not only the number of steps associated with the player's currently picked
selection, but also on each of the numbers of steps associated with the player's
previously picked selections. Thus, even if somehow this claim language reads
on Baerlocher for the first offer, after the first offer is rejected, the Baerlocher
gaming device clearly does not perform this step of revealing for each subsequent
offer. For at least this reason alone, the rejection under section 102 of Claims 1
and 18 (and the claims which depend therefrom) should be reversed.

21

Appl. No. 10/086,014

4. The Examiner's Analysis is Incorrect

During prosecution, the Examiner appears to have taken many positions
which are incorrect. For example, at one point, the Examiner appears to have
interpreted the offers in Baerlocher to be the offers in the Claims. At another
point, the Examiner appears to have interpreted the steps in Baerlocher to be the
offers in the Claims. Under either of these interpretations, Baerlocher does not
anticipate the claimed invention for at least the reasons set forth below.

Moreover, the Examiner appears to be setting forth additional analysis,
which is not fully understood. Below is a response to this analysis based on an
apparent understanding of the Examiner's reasoning. The Examiner is invited to
write a clear step-by-step analysis (preferably using an example based on the
Baerlocher game) in the Examiner's Answer to explain his position so that a
proper response can be provided in Appellant's Reply.

A. If the Offers of Baerlocher are Considered to be the Offers of
the Claims, then the Selections of Baerlocher are Not Directly and
Individually Associated with the Offers

Under a first interpretation of Baerlocher, the Examiner appears to reason
that the offers of Baerlocher are the offers in the Claims. If so, this first
interpretation does not support the section 102 rejection because Baerlocher does
not disclose that its offers are directly and individually associated with its
selections which are pickable by the player. Rather, the different offers in
Baerlocher are respectively associated with different numbers or amounts of
steps. That is, the offers in Baerlocher are at best indirectly associated with the
selections (via the intermediary of the steps). It is noted that in the April 4, 2006
Office Action, the Examiner acknowledged this indirect association by stating that
the "'association' between the masked selections and the offer would be defined
by the mapping of the resultant number of accrued steps for any given selection."

22

Appl. No. 10/086,014

Moreover, in the October 13, 2006 Final Office Action, the Examiner states that:

[o]n page 1 1 of the remarks by Applicant, the Applicant contends
that the present claims include a direct and individual association
between a selection and the value associated with said selection
and that this relationship defines the claimed invention over the
previously presented first interpretation. Respectfully, the Applicant
is interpreting this new claim language of a narrower scope than
presented. A direct and individual association as utilized in the
presented claims sets forth only a minimum of a one to one
correspondence between a selection and a value but not a sole,
unique or unrepeated relationship. By way of a brief example, the
selection of elements A and B' can both be directly and individually
associated with the common value 3 hence while player's selection
of A' or B' may result in the achievement of the value 3, the selection
of A' does not imply the selection of B' and nor would the selection
of B' imply the selection of A.

This reasoning is difficult, if not impossible to understand. To the extent
understood, the Examiner appears to be reasoning that in Baerlocher certain
offers are associated with different numbers of accumulated steps. For example,
in Baerlocher, the offer of 20 is associated with both 2 steps and 3 steps. As seen
in Fig. 4B, since a player can pick selection 108n associated with 2 steps and
then the player can pick selection 108i associated with 1 step to accumulate to 3
steps, the Examiner appears to be saying that the offer of 20 is directly and
individually associated with both selections 108n and 108i in that play of the
game. This example of a Baerlocher game play still does not meet the claim
language that each offer is directly and individually associated with a separate
one of the selections.

For at least this additional reason alone, the rejection under section 102 of
these Claims 1 and 18 (and the claims which depend therefrom) should be
reversed.

23

Appl. No. 10/086,014

B. If the Amounts or Numbers of the Steps of Baerlocher are the
Offers of the Claimed Invention, then the Offers of Baerlocher are Not
Payable to a Player

Under a second interpretation of Baerlocher, the Examiner appears to
reason that the amounts or number of the steps of Baerlocher are the offers in the
Claims. If so, this second interpretation does not support the section 102 rejection
because Baerlocher does not disclose that the amounts or numbers of the steps
are payable to a player. In Baerlocher, the offers are payable to the player (if the
player accepts a revealed offer), but the amounts or number of the steps are not
payable to the player. For example, as seen in Fig. 5B of Baerlocher, the player's
picked selection 108g revealed 7 accrued steps. In this example, the amount or
number of 7 (associated with the revealed number of steps) is not payable to the
player, but rather the offer of 30 (associated with the 7 steps) is payable to the
player (if the player accepts the offer of 30). Accordingly, the amounts or
numbers of the steps in Baerlocher can not be interpreted as the offers to reject
the claims.

In the October 13, 2006 Final Office Action, the Examiner states that:

[o]n Page 1 1 of the remarks by Applicant, the Applicant contends
that the present claims include the feature of paying elements to the
player not provided for in the previously presented second
interpretation. While it is noted the prior art does set forth a set of
paying an award separate from the steps (col. 7: 5-16) it additionally
refers to the accrual of steps. These steps are awarded and
equivalently paid though the play of the game and shown as Steps
Accrued (Elm 112). While these steps are later redeemed for an
associated reward corresponding to the number of steps accrued in
the time between the awarding of these steps and their redemption
they are none the less the result of the player's action throughout
the game and contain an intermediate value in so much as they are
eventually redeemed for a credit value prize.

By stating that the number of accrued steps are awarded because they contain an
intermediate value that is eventually redeemed for a credit value prize, the
Examiner appears to be equating the offers in Baerlocher (i.e., the Examiner's

24

Appl. No. 10/086,014

"intermediate value redeemed for a credit value") with the offers in the Claims.
However, interpreting the Baerlocher offers as being the offers of the Claims is
contradictory to the Examiner's underlying argument that the amounts or numbers
of the Baerlocher steps are the offers of the Claims.

The Examiner can either interpret the offers in Baerlocher or the amounts
or numbers of the steps in Baerlocher as the offers of the Claims, but not both at
the same time. It is clearly improper for the Examiner to interpret the amounts or
numbers of the Baerlocher steps as the offers of the Claims (and then upon a
showing that the amounts or numbers of the steps are not payable to the player),
to simultaneously interpret the Baerlocher offers as the offers of the Claims.

For example, the October 13, 2006 Final Office Action stated that
Baerlocher includes a processor operable for each play of the game to "(a)
directly and individually associate said values with said selections" and "(c) reveal
the value/offer directly and individually associated with the selected selection to
the player".

As described above, if the offers in Baerlocher are interpreted as the offers
of the Claims, then unlike the gaming devices and methods of operating a game
of a gaming device of Claims 1 to 10, 18 and 20, in Baerlocher each offer is not
directly and individually associated with a separate one of the selections. On the
other hand, if the amounts or numbers of the steps in Baerlocher are interpreted
as the offers of the Claims, then as described above and unlike the gaming
devices and methods of operating a game of a gaming device of Claims 1 to 10,
18 and 20, the offers in Baerlocher are not payable to the player (and
subsequently paid if the player accepts the revealed offer).

For at least these reasons, the rejection under section 102 of these Claims
1 and 18 (and the claims which depend therefrom) should be reversed.

5. The Examiner has Incorrectly Rejected Claims 1 to 10, 18 and 20
under 35 U.S.C. §112, First Paragraph.

The October 13, 2006 Final Office Action stated that:

25

Appl. No. 10/086,014

Claims 1 to 10, 18 and 20 stand rejected under 35 U.S.C. §112, first
paragraph, because the specification, while being enabling for
awarding a selection, does not reasonably provide enablement for
paying a selection. The specification does not reasonably provide
enablement for paying a selection. The specification does not
enable any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make or use the invention
commensurate in scope with these claims. The specification as
originally filed provides for the awarding of an offer to the
player however the Applicant now uses and argues the term paying
as proposed distinction between the presently claimed invention and
the prior art as applied. As this term is relied upon for by the
Applicant to provide a distinction from the prior art in their remarks
dated August 1, 2006 and there appears to be no prior support for
this distinction in the application as originally filed, (emphasis
added).

The Examiner's argument are not fully understood because the pending claims do

not include the element of paying a selection. The claim language of Claim 1

states "pay said revealed offer to the player." The claim language of Claim 18

states "providing the offer to the player." The specification provides enablement

for paying a revealed offer to the player. For example page 14, line 10 of the

specification states that: "[i]f the player accepts the offer, the gaming device

provides the player with the offer, the player cannot obtain any more offers and

the bonus game terminates."

Moreover, page 8, line 19 of the specification states that:

A player may cash out and thereby receive a number of coins
corresponding to the number of remaining credits by pushing a cash
out button 26. When the player cashes out, the player receives the
coins in a coin payout tray 28. The gaming device 10 may employ
other payout mechanisms such as credit slips redeemable by a
cashier or electronically recordable cards which keep track of the
player's credits.

Accordingly, these rejections of Claims 1 to 10, 18 and 20 should be reversed.

It is therefore respectfully submitted that the rejections of all of the claims
should be reversed, and such decision is respectfully requested.

26

Appl. No. 10/086,014

Respectfully submitted,

Adam H. Masia
Reg. No. 35,602
Customer No. 29159

Dated: March 9, 2007

27

Appl. No. 10/086,014

CLAIMS APPENDIX

1 . A gaming device comprising:
a game including:

(i) a plurality of offers, wherein said plurality of offers are payable to
a player, and

(ii) a plurality of player selectable masked selections;
a display device;

an input device;

a memory device storing a plurality of instructions; and

a processor adapted to communicate with the display device and the input
device, said processor operable to execute said instructions to operate with said
display device and said input device, for each play of the game, to:

(a) directly and individually associate said offers with said
selections, such that each offer is directly and individually
associated with a separate one of the selections,

(b) enable the player to select one of said selections,

(c) reveal the offer directly and individually associated with the
selected selection to the player,

(d) enable the player to accept or reject the revealed offer,

(e) repeat steps (a) to (d) at least once if said player rejects said
revealed offer, wherein if the player rejects said revealed offer, for
said repeat of step (a) said revealed offer is directly and individually
reassociated with one of said masked selections for at least one
subsequent selection by the player; and

(f) if the player accepts said revealed offer, pay said revealed
offer to the player.

2. The gaming device of Claim 1 , wherein said plurality of offers are randomly
selected from at least one pool of offers.

28

Appl. No. 10/086,014

3. The gaming device of Claim 1, wherein said processor is adapted to
randomly determine the offer associated with each selection.

4. The gaming device of Claim 1 , wherein the number of offers is equal to the
number of selections.

5. The gaming device of Claim 1 , wherein the number of offers is greater than
the number of selections.

6. The gaming device of Claim 1 , wherein the number of offers is less than
the number of selections.

7. The gaming device of Claim 1, wherein said processor is adapted to
associate one of said offers with each of said selections.

8. The gaming device of Claim 1, wherein said processor is adapted to
reassociate each of said offers with said selections after the player has rejected a
preset number of revealed offers.

9. The gaming device of Claim 1, wherein each of said offers is only
associated with one selection.

10. The gaming device of Claim 9, wherein said offers may be associated with
a plurality of selections.

29

Appl. No. 10/086,014

11. A gaming device having a game comprising:

a plurality of values, wherein each of said values is greater than zero;
a plurality of player selectable selections;
a display device;

a processor which communicates with said display device, associates said
values with said selections wherein each selection is associated with one of said
values, displays to a player the association between at least one of the values
associated with one of the selections and said selection, causes the display
device to display a rearrangement of the selectable selections in a manner
discernable by the player prior to the player's selection of one of the selectable
selections, wherein after the rearrangement of the selectable selections on the
display, each selection remains associated with said previously associated value,
enables the player to select one of the selections, and provides the player the
value associated with the selected selection.

12. The gaming device of Claim 11, wherein said processor causes the display
device to reveal the values associated with non-chosen selections.

1 3. The gaming device of Claim 1 1 , wherein said processor causes the display
device to reveal the maximum value associated with said selections prior to
enabling the player to select one of said selections.

14. The gaming device of Claim 1 1 , wherein said processor causes the display
device to reveal the minimum value associated with said selections prior to
enabling the player to select one of said selections.

15. The gaming device of Claim 11, wherein said processor randomly
determines which value associated with said selections to reveal to the player
prior to enabling the player to select one of said selections.

30

Appl. No. 10/086,014

1 6. The gaming device of Claim 1 1 , wherein said processor causes the display
device to reveal a plurality but not all of values associated with said selections
prior to enabling the player to select one of said selections.

17. The gaming device of Claim 11, which includes means for enabling the
player to cause the processor to re-reveal a revealed value associated with said
selections prior to enabling the player to select one of said selections.

18. A method for operating a game of a gaming device, said method
comprising, for each play of the game, the steps of:

(a) triggering a play of the game;

(b) directly and individually associating a plurality of offers with a
plurality of selections, such that each offer is directly and individually
associated with a separate one of the selections, wherein said
plurality of offers are each payable to a player;

(c) displaying said plurality of selections;

(d) revealing one of said offers directly and individually associated with
one of said selections to the player;

(e) enabling the player to pick one of the selections;

(f) revealing said offer directly and individually associated with said
picked selection to the player;

(g) enabling the player to accept or reject said revealed offer;

(h) providing the offer to the player if the player accepts said offer or if
the offer is a last offer; and

(i) repeating steps (b) through (h) if the player rejects said offer and the
offer is not the last offer, wherein if the player rejects said revealed
offer, for said repeat of step (b) said revealed offer is directly and
individually reassociated with one of said selections for at least one
subsequent selection by the player.

19. Canceled

31

Appl. No. 10/086,014

20. The method of Claim 18, wherein the offer revealed to the player is the
maximum offer.

21. A method for operating a game of a gaming device, said method
comprising the steps of:

(a) triggering the game;

(b) associating a plurality of values with a plurality of selections, wherein
each of said values is greater than zero and each selection is
associated with one of said values ;

(c) displaying said plurality of selections;

(d) revealing one of said values associated with one of said selections
to the player;

(e) displaying a rearrangement of the selections in a manner
discernable by a player prior to the player's pick of one of the
selections, wherein after the rearrangement of the selections, each
selection remains associated with said previously associated value;

(f) enabling the player to pick one of the selections; and

(g) communicating said value associated with said picked selection to
the player.

32

Appl. No. 10/086,014

22. A gaming device operable under control of a processor, said gaming
device comprising:

a game controlled by the processor;

a plurality of offers in the game, wherein each of said offers is greater than
zero and payable to a player;

a plurality of player selectable selections in the game; and
a display device operable to display the game;

wherein said processor is programmed to operate with the display device
to control a play of the game by:

(a) directly associating said offers with said selections, wherein
each selection is associated with one of said offers;

(b) enabling the player to select one of said selections;

(c) revealing the offer associated with the selected selection;

(d) enabling the player to accept or reject the revealed offer;

(e) if the player accepts the revealed offer, providing the revealed
offer to the player;

(f) if the player rejects the revealed offer, causing the display
device to display a rearrangement of the selectable selections in a manner
discernable by the player prior to the player's subsequent selection of one of the
selectable selections, wherein after the rearrangement of the selectable selections
by the display device, each selection remains associated with said previously
associated offer;

(g) enabling the player to pick one of the selections; and

(h) providing the player the offer associated with the picked

selection.

33

Appl. No. 10/086,014

APPENDIX A

Claim 1

Drawings

Specification

A gaming device comprising:

Figs. 1A, 1B&2

Page 7, line 4 to
page 1 1 , line 1 2

a game including:

Figs. 3A & 3B

Page 3, lines 17 to
18; Page 12, lines 4
to 7

(i) a plurality of offers, wherein
said plurality of offers are
payable to a player, and

Figs. 3A & 3B

Page 3, lines 20 to
25; page 13, lines
10 to 18

(ii) a plurality of player
selectable masked selections;

Figs. 3A & 3B

Page 3, line 21;
page 12, lines 10 to
12

a display device;

Figs. 1A, 1B&2

Page 9, lines 1 to 13

an input device;

Figs. 1A, 1B&2

Page 10, lines 7 to
14

a memory device storing a
plurality of instructions; and

Fig. 2

Page 9, line 18 to
page 10, line 6

a processor adapted to
communicate with the display
device and the input device,
said processor operable to
execute said instructions to
operate with said display device
and said input device, for each
play of the game, to:

Fig. 2

Page 9, line 18 to
page 1 1 , line 5

(a) directly and individually
associate said offers with said
selections, such that each offer
is directly and individually
associated with a separate one
of the selections,

Figs. 3A & 3B

Page 12, line 12 to
page 13, line 5

(b) enable the player to select
one of said selections,

Figs. 3A & 3B

Page 13, lines 10 to
12'

(c) reveal the offer directly and
individually associated with the
selected selection to the player,

Fig. 3B

Page 13, lines 12 to
16

34

Appl. No. 10/086,014

(d) enable the player to accept
or reject the revealed offer,

Fig. 3B

Page 14, lines 1 to
10

(e) repeat steps (a) to (d) at
least once if said player rejects
said revealed offer, wherein if
the player rejects said revealed
offer, for said repeat of step (a)
said revealed offer is directly
and individually reassociated
with one of said masked
selections for at least one
subsequent selection by the
player; and

Figs. 3A & 3B

Page 14, lines 12 to
15; Page 12, line 12
to page 13, line 5

(f) if the player accepts said
revealed offer, pay said
revealed offer to the player.

Figs. 1A& 1B

Page 14, lines 10 to
12

35

Appl. No. 10/086,014

Claim 18

Drawings

Specification

A method for operating a game of a
gaming device, said method
comprising, for each play of the
game, the steps of:

Figs. 1A, 1B&2

Page 7, line 4 to
page 1 1 , line 12

(a) triggering a play of the
game;

Figs. 3A & 3B

Page 3, lines 17 to
18; Page 12, lines 4
to 7

(b) directly and individually
associating a plurality of offers
with a plurality of selections,
such that each offer is directly
and individually associated with
a separate one of the
selections, wherein said plurality
of offers are each payable to a
player;

Figs. 3A & 3B

Page 12, line 10 to
page 13, line 18

(c) displaying said plurality of
selections;

Figs. 3A & 3B

Page 3, line 21;
page 12, lines 10 to
12

(d) revealing one of said offers
directly and individually
associated with one of said
selections to the player;

i— ■ ^ a a A D O A

Figs. 4A, 4B & 4C

Page 15, lines 20 to
21

(e) enabling the player to pick
one of the selections;

Figs. 3A & 3B

Page 13, lines 10 to
12;

(f) revealing said offer directly
and individually associated with
said picked selection to the
player;

Fig. 3B

Page 13, lines 12 to
16

(g) enabling the player to
accept or reject said revealed
offer;

Fig. 3B

Page 14, lines 1 to
10

(h) providing the offer to the
player if the player accepts said
offer or if the offer is a last offer;
and

Figs. 1Aand B

Page 14, lines 10 to
12

(i) repeating steps (b) through
(h) if the player rejects said offer
and the offer is not the last offer,
wherein if the player rejects said
revealed offer, for said repeat of
step (b) said revealed offer is
directly and individually
reassociated with one of said

Figs. 3A & 3B

Page 14, lines 12 to
15; Page 12, line 12
to page 13, line 5

36

Appl. No. 10/086,014

selections for at least one
subsequent selection by the
player.

Appl. No. 10/086,014

EVIDENCE APPENDIX

This is no attached evidence.

38

Appl. No. 10/086,014

RELATED PROCEEDINGS APPENDIX

There are no related proceedings.

39